Saturday, December 29, 2007

Following the opinion of the Supreme Court, the per curiam order of the CAFC noted:

This case is back in this court on remand from the Supreme Court of the United States. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., -- U.S. --, 117 S. Ct. 1040 (1997). In Warner-Jenkinson, the Court reversed the judgment of this court ...

(...)

Because of this presumption, we expect that the PTO and applicants will henceforth usually include in the prosecution history express statements of their reasons for requiring or making claim changes or interpretive assertions. Express recitations may not exist, however, in applications prosecuted prior to the Supreme Court’s decision. See Warner-Jenkinson, 117 S. Ct. at 1055 (Ginsburg, J., concurring) (“Years after the fact, the patentee may find it difficult to establish an evidentiary basis that would overcome the new presumption.”). Thus, we conclude that where the prosecution history is silent or unclear the district court should give a patentee the opportunity to establish the reason, if any, for a claim change. See id. (urging the Federal Circuit to “bear[] in mind the prior absence of clear rules of the game”).

IPBiz notes that of the issue of "equivalent: yes or no," the patentee won, with the CAFC writing:

We have reconsidered the pH equivalence issue in light of the Supreme Court’s guidance and hold that there is substantial record evidence to support the jury’s verdict of equivalence. The ‘746 patent claim recites a pH range “from approximately 6.0 to 9.0.” Warner-Jenkinson performed the process using a pH of 5.0.

***Separately, IPBiz observes that the text in the amended claim was used because that was the text in the specification for which there was written support. The lower limit of 6 was not needed for prior art, but the upper limit of 9 was lower than that needed to overcome prior art. NEITHER 6 NOR 9 was optimal for the patentee but that it was the patentee had support for.***Of the text --There is no law that says if one discloses a range, then both ends of the range must be incorporated into any related claim. Furthermore, even if some court ultimately did decide this, at the time of prosecution one should not assume that outcome.-- how about 35 USC 112 P1, which is probably what the patent prosecutor ran into when he/she had to amend? There has to be written description support for a claim amendment, and a range 6-9 is not the same thing as less than 9. The patentee was forced into the 6-9 range by the examiner, long before any court looked at this. This is why experienced prosecutors include ranges which express alternative embodiments.

And this of course doesn't answer the real question: if 6-9 was forced because of 112, and not because of 102/103, was that related sufficiently to patentability to invoke estoppel? That question was never answered in Hilton Davis.

1 Comments:

Now, come on. You truncated that quote a bit early. In that same passage, Fed. Cir. said:

Accordingly, assuming prosecution history estoppel does not preclude such a finding, we reaffirm our prior decision that a pH of 5.0 is equivalent to a pH of "approximately 6.0 . . . (emphasis added)

That is not a "win" on DOE for the patentee.

But really, the case should be about how the thing should have been claimed in the first place. Given what the originally filed claims and spec said in Hilton Davis, there was support for:

(i) a claim with no pH limitation;

(ii) a claim with an upper pH limit (of 9.0) only;

(iii) a claim with an lower pH limit (of 6.0) only; and

(iv) a claim with an upper and a lower limit.

There is no law that says if one discloses a range, then both ends of the range must be incorporated into any related claim. Furthermore, even if some court ultimately did decide this, at the time of prosecution one should not assume that outcome. When the Hilton Davis patent prosecutor faced the high pH prior art, he should have put the upper limit only into his independent claim. The lower limit would be a dependent claim from that. That way, if the upper limit only claim were deemed supported (as it probably would be), then there is no DOE issue. Infringement would be literal. If, OTOH, there was deemed to be a written description, or other, problem with the upper limit only independent claim, then the litigators could fall back on the dependent claim, pleading in the alternative, as it were. The point is, this call is best preserved for the later litigators and license negotiators, and not made by the prosecuting agent during prosecution. A good agent keeps options open. Sometimes that is difficult, but here I don't think it was, even when I look at the facts of the case stripped of the hindsight provided by Warner-Jenkinson's "infringement."

Furthermore, if the Hilton Davis patent prosecutor had candidly admitted that he was adding the 6.0 out of written description concerns, then Hilton Davis certainly would have lost on DOE, instead of conditionally winning as they did under the 1997 Fed. Cir. decision.

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I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
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